Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1094213
`11/09/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`Xerox Corporation
`
`Corporation
`
`201 MERRITT 7
`NORWALK, CT 06851-1056
`UNITED STATES
`
`Citizenship
`
`New York
`
`Attorney informa-
`tion
`
`MARGARET W. WALKER
`201 MERRITT 7
`NORWALK, CT 06851-1056
`UNITED STATES
`Primary Email: usa.ogc.trademark.docket@xerox.com
`Secondary Email(s): margaret.walker@xerox.com
`203-849-2319
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88956163
`
`Publication date
`
`10/20/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`11/09/2020
`
`Opposition Peri-
`od Ends
`
`11/19/2020
`
`Twisted X, Inc.
`1200 SOUTH FM 51, SUITE E
`DECATUR, TX 76234
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Footwear
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2075858
`
`Registration Date
`
`07/01/1997
`
`Word Mark
`
`Design Mark
`
`XEROX
`
`Application Date
`
`09/26/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1961/00/00 First Use In Commerce: 1961/00/00
`clothing, namely, jackets, sweaters, shirts, vests, pants, shorts, hats, scarves,
`ties, gloves, socks and shoes
`
`Attachments
`
`Application No. 88956163 in Class 25 for the Trademark ZEROX in the n ame of
`Twisted X, Inc.pdf(422926 bytes )
`
`Signature
`
`/Margaret W. Walker/
`
`Name
`
`Date
`
`Margaret W. Walker
`
`11/09/2020
`
`

`

`Application No. 88956163 in Class 25 for the Trademark “ZEROX” in the name of Twisted X, Inc.
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`
`TRIAL AND APPEAL BOARD IN THE MATTER OF
`
`Application No. 88956163 in Class 25 for the Trademark
`“ZEROX” in the name of Twisted X, Inc.
`
`-And -
`
`Opposition thereto by Xerox Corporation of the address
`
`201 Merritt 7, Norwalk, Connecticut 06851-1056, United
`
`States of America.
`
`
`
`
`
`We, Xerox Corporation, a corporation organized under the laws of the State of New York, United States of
`
`America of the address, 201 Merritt 7, Norwalk, Connecticut 06851-1056, United States of America
`[hereinafter “Opponent”] hereby give notice of the Opponent’s intention to oppose Application No.
`88956163 in Class 25 for the mark “ZEROX” [hereinafter “Impugned Mark”] in the name of Twisted X,
`Inc. [hereinafter referred to as the “Applicant”] advertised in United States Trademark Official Gazette
`Publication Published on October 20, 2020 for “Footwear” [hereinafter “impugned goods”].
`
`
`
`The grounds of Opposition are under:
`
`
`
`1.
`
`
`
`2.
`
`The Opponent (Xerox Corporation), a corporation organized under the laws of the State of New
`York, United States of America is an $11 billion technology and services concern and the world’s
`
`leading document management enterprise.
`
`The Opponent offers the world’s most widely established, accepted and trusted array of innovative
`
`document solutions, services and systems, including color and black and white printers, digital
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`printers, publishing systems, multifunction devices, digital copiers, laser and solid ink network
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`printers, copiers, facsimile machines, toner, paper, ink, associated supplies, software and support
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`specially designed for offices and production printing environments.
`
`
`
`3. The Opponent is a Fortune 500 Company with operations spread over 160 countries with over
`
`35,300 employees worldwide serving small and mid-size businesses, large enterprises,
`
`governments and graphic communications providers.
`
`
`
`

`

`4. The Opponent has a huge business globally in the fields as aforesaid, which is carried out under its
`extremely well-known and iconic trade and service mark “XEROX”. The association of the
`Opponent with the trade and service mark “XEROX” dates as far back as 1948. The term
`
`specifically relates to US Patent No. 2,297,691 obtained by Mr. Chester Carlson for
`
`electrophotography (later called Xerography) in 1942 and the procurement of a license to the
`
`Carlson patent by the Haloid Company in 1947 to develop and market a copying machine based on
`
`the Carlson patent. The Haloid Company then coined and registered a trademark for the word
`“XEROX” for the new copiers in 1948, at a time when no such word was known or in use. Ever
`since its adoption, the Opponent has extensively and continuously used the trademark “XEROX”
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`across the world, including in the United States of America.
`
`
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`5. The Haloid Company changed its name to Haloid Xerox in 1958 and finally to Xerox Corporation
`
`in 1961.
`
`
`6. The trademark “XEROX” apart from being the trade and service mark of the Opponent is also an
`
`integral and conspicuous part of its trading style, so much so that the Opponent, its business, goods
`and/or services are themselves readily recognized by mere reference made to them as “XEROX”
`Consequently, all references to the Opponent hereinafter also include references to “XEROX”.
`
`
`7. The trademark “XEROX” has all the trappings of an invented mark as it has been uniquely adopted
`by conjoining the Greek words for ‘dry' and 'writing'. Therefore, by reasons of its invention, it is
`
`not only inherently distinctive, but also entitled to the highest level of protection including across
`
`all classes of goods or services.
`
`
`8. The trademark “XEROX” is a highly distinctive mark not only on account of its inherent
`
`distinctiveness and invented nature but also equally on account of its acquired reputation due to
`
`extensive use. Hence, the Opponent is the legitimate proprietor of the trademark and tradename
`“XEROX” and has an indelible history that has resulted from honest adoption, uninterrupted use,
`
`large-scale promotion, established goodwill and well-known character of its trademark and
`
`tradename.
`
`
`9. It is submitted that the Opponent’s trademark “XEROX” and tradename enjoys global presence as
`
`the Opponent has administrative, manufacturing, engineering, assembly and customer operations
`spread across the world. The Opponent’s operations under their well-known trademark “XEROX”
`
`
`
`2
`
`

`

`are widespread geographically spanning several countries inter alia United States of America,
`
`Canada, Egypt, Ireland, India, Netherlands, Spain, United Kingdom, France, Angola, Argentina,
`
`Austria, Belarus, Belgium, Brazil, Bulgaria, Chile, Colombia, Costa Rica, Croatia, Curacao, Czech
`
`Republic, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, Finland, Germany,
`
`Greece, Guatemala, Hungary, Ireland, Israel, Italy, Jamaica, Kazakhstan, Latvia, Mexico,
`
`Morocco, Netherlands, Nicaragua, Norway, Panama, Paraguay, Peru, Philippines, Poland,
`
`Portugal, Romania, Russia, Slovak Republic, Slovenia, South African, Spain, Sweden,
`
`Switzerland, Turkey, Uganda, Ukraine, United Arab Emirates, Uruguay, Uzbekistan, Venezuela,
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`Yugoslavia, Hong Kong, China, Indonesia, Philippines, South Korea, Taiwan, Australia, Japan,
`
`Malaysia, New Zealand, Singapore, South Korea, Taiwan, Thailand, Vietnam.
`
`
`10. The goods of the Opponent under the trademark “XEROX” are extensively manufactured,
`
`marketed and sold around the globe and various countries of the world including United States with
`
`sales running into several millions of dollars annually. The Opponent has also been spending huge
`
`amounts of money and has put in unparalleled efforts to advertise and promote its products and
`services under the trademark and tradename “XEROX”. The Opponent also maintains the website
`
`http://www.xerox.com that, details the background of the Opponent apart from explaining and
`
`listing the products and services sold or rendered by the Opponent under their trademark and
`tradename “XEROX”. The said website is a further extension of the Opponent’s intellectual
`property rights in the trademark “XEROX”. This website is freely accessible to one and all and
`
`has served in making consumers worldwide aware of the high-quality products and services under
`the trademark “XEROX” of the Opponent.
`
`
`OPPONENT’S INTELLECTUAL PROPERTY RIGHTS
`
`
`
`11.
`
`The Opponent being the legitimate proprietor and long-standing user of the trademark and
`tradename “XEROX”, has acquired statutory and common law rights in the said mark across the
`
`world including in the United States. It is thus entitled to the exclusive and proprietary use thereof
`and any use by a third party of the said trademark would amount to violation of the Opponent’s
`established rights in the trademark “XEROX”. The Opponent is also the registered proprietor of
`the trademark “XEROX” in respect of goods/services in various classes in the United States. An
`
`indicative list of some such registrations is as follows:
`
`
`
`
`
`
`
`3
`
`

`

`Trademark
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`“XEROX”
`
`
`Registration
`30 May 1950
`16 Jun 1953
`22 Sep 1953
`06 Jul 1971
`17 Apr 1973
`07 Jan 1975
`01 Apr 1975
`13 May 1975
`22 Oct 1991
`29 Oct 1991
`01 Jul 1997
`19 Oct 2010
`09 Aug 2016
`
`International
`16
`1
`3
`41
`9
`9
`37,42
`35
`16
`9
`25
`2,9,16,35,37,42
`36,41
`
`Registration Number
`525717
`576118
`580296
`916047
`957267
`1000990
` 1008036
`1010557
`1661698
`1662340
`2075858
`3864431
`5016441
`
`The aforementioned registrations confer upon the Opponent the exclusive right to use the trademark
`“XEROX” to the exclusion of others and to restrain the use and/or registration of any identical
`
`and/or deceptively similar mark.
`
`
`
`CASE AGAINST THE APPLICANT:
`
`
`12. The impugned mark “ZEROX” filed on June 9, 2020 under United States Trademark
`Application No. 88956163 in class 25, filed in the name of Twisted X, Inc. This “ZEROX”
`
`trademark application was filed on in connection with International Class 025: Footwear. The
`“ZEROX” mark is phonetically and conceptually similar to the Opponent’s prior registered and
`well-known mark “XEROX” in connection with International Class 25: clothing, namely,
`
`jackets, sweaters, shirts, vests, pants, shorts, hats, scarves, ties, gloves, socks and shoes. The
`
`adoption and unauthorized use of a deceptively similar mark would undoubtedly result in the
`reduced ability of the public to identify the Opponent’s trademark “XEROX” with its goods and
`services. Any use of the mark “ZEROX” violates the Opponent’s statutory and common law
`rights in the Opponent’s mark “XEROX” and will result in dilution of the Opponent’s well-
`
`known stature.
`
`
`
`13.
`
`It is submitted that any use or registration of the impugned mark would result in dilution of the
`well-known repute and stature of the Opponent’s trademark “XEROX”. Opponent’s trademark
`
`enjoys established reputation and goodwill in the United States and the use, if any of the
`
`impugned mark by the Applicant without due cause and the attempted registration of the
`
`
`
`4
`
`

`

`impugned mark would take unfair advantage of and would be detrimental to the distinctive
`character of the Opponent’s trademark. The exclusivity of the Opponent’s trademark would be
`
`diluted if third parties such as the Applicant are allowed to register similar marks. It would also
`
`result in flooding of markets with several third-party goods under similar/identical marks. In
`
`view thereof, the impugned mark ought to be refused registration. Thus, the learned Registrar
`
`is humbly requested to refuse registration of the impugned trademark in exercise of its
`
`discretion.
`
`
`14.
`
`In light of the above stated facts and circumstances, it is prayed that:
`
` i) The impugned mark in class 25 under Application number 88956163 be refused
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`registration.
`
` ii) The instant opposition be allowed.
`
`
`
`
`
`
`
`
`
` Respectfully,
`
`
` /Margaret W. Walker/
`
`
`Margaret W. Walker
`
`
`Associate General IP Counsel
` Margaret.walker@xerox.com
`
` 203-849-2319
`
`5
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`